Ti Diamond Chain Ltd. vs Ashok Kumar And Anr.
2001 Latest Caselaw 296 Del

JUDGMENT

N.G. Nandi, J.

1. In this suit, the plaintiff pray for relief of perpetual injunction restraining defendants from manufacturing, selling, offering for sale and distributing Chain Packet Kit for use in Automobiles under the trade mark Diamond, both device and words, DIAMOND SUPER or any trade mark which is identical with or deceptively similar to the plaintiff's trade mark amounting to infringement; ALSO seeking to restrain defendants from manufacturing, selling, offering for sale and distributing packing material like Annexure "B" so as to pass off the defendants' goods and products as and for the goods and products of the plaintiff or in any way connected with the plaintiff's trade mark DIAMOND both device and words, DIAMOND SUPER as well as packing material like Annexure "A" and ALSO restraining the defendants from infringing the copy right of the plaintiff and reproduction of the artistic work as shown in Annexure "A".

2. Defendants were served with the summons in the suit. Despite service of summons to the defendants, neither of the defendants filed appearance and defendants were accordingly proceeded ex-parte vide order dated 12.8.1998. The plaintiff filed affidavit by way of ex-parte evidence and the documents filed by the plaintiff were given exhibits.

3. The case set out in the plaint is that the plaintiff is a company incorporated under the Companies Act, 1956 and having its registered office at the address shown in the cause title of the plaint, that plaintiff company is one of the leading and pioneer and well reputed manufacturers of chains and sproket used in motorcycle mopeds; that the chain front sproket and rear sproket are sold as a kit in a unique and distinctive packaging material (hereinafter referred to as 'Kit'); that the chains are made of common metal; that the Kits are used for motorcycles, mopeds cars and motor land vehicles, etc. and also as original equipment by leading two-wheeler manufacturers; that the products are manufactured under collaboration arrangement with Diamond Chain Company, USA; that the plaintiff company products are well known for their quality not only in the domestic market but they are also exporting their products outside India; that the plaintiff company has also received ISO 9002 certificated for its manufacturing facility; that the plaintiff company has been continuously, regularly and extensively using the trade mark DIAMOND/DIAMOND SUPER on all their products including Chain Packet Kit in a unique and distinctive packing in which the plaintiff's goods are sold, advertised and displayed for sale all over India and several countries all over the world; that the plaintiff company is the registered proprietor of the marks in India pertaining to the trademark DIAMOND both word and device; that trademark DIAMOND registered under No. 371 as of 2nd June, 1942 in Class 12 in respect of Chains made of common metals for conveying and for transmission of power, including machine-made chains, bicycle chains, motorcycle chains, automobile chains and parts of such chains comprising repair links, connecting links, roller links, offset links and side plates; that all these goods fall in Class 12; that trade mark device of DIAMOND registered under No. 717 as of 8th June, 1942 in Class 12 in respect of chains made of common metals for converting and for transmission of power, including machine-made chains, bicycle chains, motorcycle chains, automobile chains and parts of such chains comprising repair links, connecting links, roller links, offset links and side plates; that all these goods fall in Class 12; that the above registrations have been duly renewed from time-to-time and they are still valid and subsisting; that the packet Annexure "A" is unique and distinctive and have been used by the plaintiff for the first time in India and no one else; that the plaintiff's trade mark DIAMOND with every distinctive feature have always been mentioned on its packing material and used since the very beginning; that the plaintiff made some changes in the packing material filed as Annexure "A" in 1996; that the plaintiff company are the absolute owners of the copyright which subsists in the original art work of the said packing material which is used for marketing the products of plaintiff company which are the original artistic work created by the plaintiff company and no one else; that by virtue of long, extensive and continuous use of the plaintiff's goods under the above said trade mark, the plaintiff enjoys great reputation and goodwill all over India; that the plaintiff's goods under the above said trade mark and distinctive packing material are of very high quality manufactured in sophisticated factories under the strict quality control, supervision of technical experts and engineers; that it has recently come to the knowledge of the plaintiff that defendants are selling and fabricating the Kits used for motorcycles, mopeds, cars and motorland vehicles bearing the plaintiff's registered trade mark DIAMOND/DIAMOND SUPER as well as using the identical packing material; that the defendants procured the inferior quality of chain material and used chains from the local market and have also recondition the said chains and packed the same with similar packing of the plaintiff and have been selling the same in the market; that the colour scheme, getup of packing is also exactly similar to the packing material used by the plaintiff that the defendants are using the old model packing material of the plaintiff company which have been discontinued by the plaintiff in the year 1996; that the defendants have adopted identical trade mark, getup, design of the packing of the products; that the defendants have even given fraudulently the name and address of the plaintiff of the said packing of the products manufactured and marketed by the defendants; that the defendants are indulging in the said activities in a clandestine manner and they are also to the best of their knowledge are not issuing any cash memo or any voucher of the sale of the said spurious products bearing the impugned trade mark and the copyright; that the conduct of the defendants is clearly dishonest and fraudulent and they are committing fraud upon the public and that the defendants use of the said trade mark DIAMOND or DIAMOND SUPER and its logo in marketing their substandard and reconditioned goods with a similar getup, layout and packing material has become an instrument of fraud on the unscrupulous dealers who are passing off their goods and enabling others in the trade to pass their goods as the goods of the plaintiff. With these averments, plaintiff pray for reliefs aforestated more particularly in plaint paragraph 18.

4. Mr. Ajit Kumar Singh, Regional Sales Manager (North) of the plaintiff company has testified that plaintiff is a company incorporated under the Companies Act, 1956 and having its registered office at the address given in clause title of the plaint; that the plaintiff company is one of the leading and pioneer and well reputed manufacturers of chains and sproket used in motorcycle mopeds; that the chain, front sproket and rear sproket are sold as a Kit in a unique and distinctive packing materia; that the chains are made of common metal; that the Kits are used for motorcycles, mopeds, cars and motor-land vehicles, etc. and also as original equipment by leading two-wheeler manufacturers; that the products are manufactured under collaboration arrangement with Diamond Chain Company, U.S.A; that the plaintiff's company products are well known for their quality not only in the domestic market out they are also exporting their products outside India; that the plaintiff company has also received ISO 9002 certificate for its manufacturing facility; that the plaintiff company amongst others has been continuously, regularly and extensively using the trade mark DIAMOND.DIAMOND SUPER on all their products including Chain Packet Kit in a unique and distinctive packing in which the plaintiff's goods are sold, advertised and displayed for sale all over India and several countries all over the world; that the plaintiff company is the registered proprietor of the following trade marks in India pertaining to the trade mark Diamond both word and device; that trade mark DIAMOND registered under No. 371 as of 2nd June, 1942 in Class 12 in respect of chains made of common metals for conveying and for transmission of power, including machine-made chains, bicycle chains, motorcycle chains, automobile chains and parts of such chains comprising repair links, connecting links, roller links, offset links and side plates; that all these goods fall in Class 12; that trade mark device of DIAMOND registered under No.717 as of 8th June, 1942 in Class 12 in respect of chains made of common metals for conveying and for transmission of power, including machine-made chains, bicycle chains, motorcycle chains, automobile chains and parts of such chains comprising repair links, connecting links, roller links, offset links and side plates; that all these goods fall in Class 12; that the above registration have been duly renewed from time-to-time and they are still valid and subsisting; that the packet Annexure "A" is unique and distinctive and have been used by the plaintiff for the first time in India and no one else; that the plaintiff's trade mark DIAMOND with every distinctive features have always been mentioned on its packing material and used since the very beginning; that the plaintiff made some changes in the packing material filed as Annexure "A" in 1996; that the plaintiff company are the absolute owners of the copyright which subsists in the original art work of the said packing material which is used for marketing the products of plaintiff company which are the original artistic work created by the plaintiff company and no one else; that by virtue of long, extensive and continuous use of the plaintiff's goods under the above said trade mark, the plaintiff enjoys great reputation and goodwill all over India; that the plaintiff's goods under the above said trade mark and distinctive packing material are of very high quality manufactured in sophisticated factories under the strict quality control, supervision of technical experts and engineers; that plaintiff company has received ISO 9002 for its manufacturing facility that the trade mark DIAMOND both words and logo and DIAMOND SUPER as well as the unique and distinctive packing material are exclusively associated with the plaintiff and no one else; that the sales turnover and publicity expenses of the plaintiff company of the last 7 years are given as under:

   YEAR    SALES    ADVT. EXP.
    (Rs. in million)      (Rs. in million)

1990-91  200.801   4.862
1991-92  251.301   10.050
1992-93  261.536   6.995
1993-94  301.427   8.766
1994-95   370.141   9.333
1995-96  518.693   9.3999
1996-97  572.308   10.878
 
 

That it has recently come to the knowledge of the plaintiff that defendants are selling and fabricating the Kits used for motorcycles, mopeds, cars and motor-land vehicles bearing the plaintiff's registered trade mark DIAMOND/DIAMOND SUPER as well as using the identical packing material; that the defendants procured the inferior quality of chain material and used chains from the local market and have also reconditioned the said chains and packed the same with similar packing of the plaintiff and have been selling the same in the market; that the colour scheme, getup of packing is also exactly similar to the packing material used by the plaintiff; that the defendants are using the old model packing material of the plaintiff company which have been discontinued by the plaintiff in the year 1996; that the defendants have adopted identical trade mark, getup, design of the packing of the products; that the defendant have even given fraudulently the name and address of the plaintiff on the said packing of the products manufactured and marketed by the defendants, that the defendants are indulging in the said activities in a clandestine manner and they are also to the best of their knowledge not issuing any cash memo or any voucher of the sale of the said spurious products bearing the impugned trade mark and the copyright; that the conduct of the defendants is clearly dishonest and fraudulent and they are committing fraud upon the public and that the defendants use the said trade mark DIAMOND or DIAMOND and its logo in marketing their substandard and reconditioned goods with a similar get up, layout and packing material has become an instrument of fraud on the unscrupulous dealers who are passing off their goods and enabling others in the trade to pass their goods as the goods of the plaintiff; that the deliberate and dishonest act on the part of defendants to manufacture and market spurious products bearing the identical trade mark and copyright of the plaintiff company whihc is an infringement of the of the plaintiff's registered trade mark mentioned in para 4 of the plaint as well as infringement of the copyright; that an impression is being created in the minds of the purchasers that the defendants are marketing the products of the plaintiff company; that use of the trade mark and packing material is a calculated move and intended to deceive the public and to trade upon the goodwill name and reputation of the plaintiff; that defendant No. 1 is the proprietor of defendant No. 2 and they are misrepresenting to the public that they are the manufacturers and stockists of the said products of the plaintiff company which is not true; that defendants are neither stockists/dealers nor the authorised person to manufacture the products of the defendant under the trade mark DIAMOND of the plaintiff and that the plaintiff company has already suffered a huge loss in their business, reputation, name and goodwill and are likely to suffer further injury unless the defendants are restrained from using the trade mark DIAMOND/DIAMOND SUPER, its logo as well as the packing material like label Annexure "A" in respect of Kit for use in automobiles or any other trademark or packing material which are identical or deceptively similar with the registered trademark and copyright of the plaintiff and amounting to passing off their goods as the goods of the plaintiff.

5. It will be seen from the above that the affidavit by way of evidence filed by the deponent on behalf of the plaintiff company has proved the averments in the plait. It is proved on preponderance of all probability that the plaintiff's trade mark DIAMOND/DIAMOND SUPER are registered under the Trade and Merchandise Marks Act, 1958 and the plaintiff company are the absolute owners of the copyright which subsists in the original art work Annexure "A". It is also suggested that defendants have been sing the plaintiff's trade mark DIAMOND, DIAMOND SUPER both device and words, which id deceptively similar to that of plaintiff's trade mark and defendants have also been using identical packing material. The evidence on record suggests that defendants have fraudulently adopted the plaintiff's trade mark DIAMOND/DIAMOND SUPER, both device and words and have also been using the identical packing material deceptively similar so as to pass of their goods as that of the plaintiff and comparing the packing material filed as Annexure "A", the trade mark and essential features.

6. Annexure "P-2" which is the plaintiff's trade mark and defendant's trade mark Annexure "P-3" would suggest that there is every likelihood of confusion being created in the mind of purchasers and it is quite likely that defendants goods may be purchased by customers taking the same to have been manufactured by the plaintiff. The colour combination, the scheme, the logo and even the writing employed would be sufficient to create confusion. The only differences is the word "Super" used by the defendants Exhibit "P-3" whereas plaintiff has used "Kit" in Exhibit "P-2". Barring this, there is absolute similarity between Exhibit "P-2" of the plaintiff and Exhibit "P-3" of the defendants. In my opinion, the plaintiff would be entitled to he decree as prayed as it is sufficiently proved on record that defendants have infringed plaintiff's trade mark DIAMOND, (both device and words) and DIAMOND SUPER (both device and words) and have also using packing material which is deceptively similar to that of the plaintiff and it is necessary that intending purchasers are protected so as not to pass of defendants goods manufactured by the defendants as that of the plaintiff. Under the circumstances the suit deserves to be decreed and the defendants restrained.

7. In the result, suit is decreed.

8. Defendants are restrained by a permanent injunction from manufacturing, selling, offering for sale and distributing Chain Packet Kit for use in automobiles under the trade mark DIAMOND, both device and words, DIAMOND SUPER of any trade mark which is identical or deceptively similar to the plaintiff's trade mark amounting to infringement and from manufacturing, selling, offering for sale and distributing packing material like Annexure "B" so as to pass off the defendants' goods and products as and by the goods and products of the plaintiff or in any way connected with the plaintiff's trade mark DIAMOND both device and words, DIAMOND SUPER as well as packing material like Annexure "A" and from infringing the copy rights of the plaintiff and reproduction of the artistic work as shown in Annexure "A".

9. Defendants are also directed by a mandatory injunction to deliver to the plaintiff all other offending material, label, stationary material, other printing blocks, dies, bearing the trade mark DIAMOND for the purpose of destruction and/or obliteration.

Defendants shall pay cost of the suit to the plaintiff and bear their own.

10. Suit decreed.